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Western Bonded Products Inc. dba Flex Foam v. Webmaster [2000] GENDND 1024 (5 September 2000)


National Arbitration Forum

DECISION

Western Bonded Products Inc. dba Flex Foam v. Webmaster

Claim Number: FA0007000095286

PARTIES

The Complainant is Western Bonded Products Inc. dba Flex Foam, Phoenix, AZ, USA ("Complainant"). The Respondent is Webmaster, Seattle, WA, USA ("Respondent").

REGISTRAR AND DISPUTED DOMAIN NAME(s)

The domain name at issue is "FLEXFOAM.COM", registered with Network Solutions Inc ("NSI").

PANELIST(s)

The Panelist certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as the panelist in this proceeding.

Panelist is Judge Karl V. Fink (Ret.).

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum ("The Forum") electronically on 07/25/2000; The Forum received a hard copy of the Complaint on 07/25/2000.

On 07/28/2000, NSI confirmed by e-mail to The Forum that the domain name "FLEXFOAM.COM" is registered with NSI and that the Respondent is the current registrant of the name. NSI has verified that Respondent is bound by the Network Solutions Service Agreement Version 5.0 and has thereby agreed to resolve domain-name disputes brought by third parties in accordance with ICANNís UDRP.

On 07/31/2000, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of 08/21/2000 by which Respondent could file a Response to the Complaint, was transmitted to Respondent via e-mail, post and fax, and to all entities and persons listed on Respondentís registration as technical, administrative and billing contacts by e-mail. It was also emailed to postmaster@flexfoam.com.

Respondent filed a timely response.

On August 23, 2000, pursuant to Complainantís request to have the dispute decided by a Single Member panel, The Forum appointed Judge Karl V. Fink (Ret.) as Panelist.

RELIEF SOUGHT

The Complainant requests that the domain name be transferred from the Respondent to the Complainant.

PARTIESí CONTENTIONS

A. Complainant
      1. Since 1984 Complainant had the trade name Flex foam duly registered in the State of Arizona.
      2. On or about May 28, 1999, Complainant purchased the domain name Flexfoam.com for $300.00 from Absolute Motion Inc.
      3. The domain name at issue is the same as the domain name that Complainant purchased and registered in May 1999.
      4. It is important to Complainant to retain the domain name at issue for its business.
      5. Respondent was able to purchase the domain name and register it with Network Solutions as a result of error or negligence by the register service.

B. Respondent
      1. On March 24, 2000 the company ordered the website www.Flexfoam.com as an optional name for its new toy and costume business, "Flexfoam".
      2. Since March of 2000, Complainant has engaged in a number of activities towards development of its business manufacturing non toxic soft toys.
      3. Respondent expects to have a product stock pile and be able to sell on-line by early 2001.
      4. Before Respondent settled on the name Flexfoam a federal trademark search was done. The only registration found was a 1982 registration for "Flexfoam" by a Dallas, Texas company unrelated to the Complainant. Flexfoam was registered for use in building materials.
      5. Complainant produces a polyurethane foam used as carpet backing and furniture filler and not in toys.
      6. Respondent has not been able to find any evidence of a trade use of the word "Flexfoam" by Complainant.
      7. Network Solutions has informed respondent that it is the first and only party to properly register and pay for the domain name in question.
      8. The domain name has been registered several times but was never paid for. The registration lapsed, was deleted by Network Solutions, and became available again at least twice.
      9. In May 2000 the domain name was available to the public when it was properly registered by Respondent and paid for in full until 2002.

FINDINGS

    1. The domain name is similar to the trade name "Flex foam" owned by Complainant.
    2. No showing has been made that the name Flex foam has been used by complainant.
    3. Complainant purchased the domain name flexfoam.com but Network Solutions, Inc. was not paid by Complainant or the entity from which the name was purchased.
    4. The domain name has been available to the public on several occasions since the registration was never paid for until Complainant registered and paid for the name.
    5. Respondent has rights and legitimate interests in the domain name having made preparations to use the name in connection with its business and having properly registered and paid for the name.
    6. Respondent made a good faith effort to find if there was any other owner or user of the term Flexfoam before it determined to use that term in its business.
    7. Although Complainant submitted a copy of a statement for the amount due for the registration of the domain name it has submitted no proof that it actually paid the registrant to have the name registered.
    8. Complainant requests that the domain name be transferred from the respondent to the complainant.

DISCUSSION

Paragraph 4(a) of the ICANN Uniform Domain Name Dispute Policy ("Policy") requires that the complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:

(1) the domain name registered by the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;

(2) the Respondent has no rights or legitimate interests in respect of the domain name; and

(3) the domain name has been registered and is being used in bad faith.

Policy  4(a)(i)(ii)(iii).

Identical and/or Confusingly Similar

The domain name is identical to and/or confusingly similar to the trade name Flex foam registered to Complainant. The addition of ".com" is not a significant difference. See Visit America, Inc. v. Visit America, FA 95093 (Nat. Arb. Forum Sug. 14, 2000) (stating that ë.comí is part of the trademark [and it] indicates the type of entity and has no significance as a mark.")

Rights or Legitimate Interests

Respondent has rights and legitimate interests in the domain name having made preparations to use the name in connection with its business and having properly registered and paid for the name. Complainant has not proven this element. See Casual Corner Group, Inc. v. Neil Young, FA 95712 (Nat. Arb. Forum Aug. 7, 2000) (holding that a respondent has rights or legitimate interests when s/he has shown demonstrable preparations to use the name in connection with a bona fide offering of goods or services).

Registration and Use in Bad Faith

No evidence has been presented that respondent registered and used the name in bad faith. Respondent made a good faith effort to determine whether there was any other owner or user of the term Flexfoam before it determined to use that name in its business. Respondent has selected a name it considers appropriate for use in connection with its business and nothing indicates bad faith on its part, as defined by ICANNís Rules. Rule 3(ix)(3); Policy 4(b). Complainant has not proven this element.

DECISION

Since Complainant has not proven the necessary elements, Complainantís request for transfer of the domain name Flexfoam.com is denied.

Judge Karl V. Fink, (Ret.)

Dated: August 29, 2000

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